WIPO End Report on Case Administration under the Afilias Sunrise Registration Challenge Policy for .info

On August 26, 2002, the WIPO Arbitration and Mediation Center completed processing the last of the 15,172 cases received under the Afilias Sunrise Registration Challenge Policy for .info (".info Policy") [*]. The present Report provides a resume of the Center’s case administration activity under this Policy. Representing probably the largest one-time domain name dispute resolution project undertaken by a provider, WIPO’s administration of these cases has not only served to give effect to the intent of the .info Policy to enforce a pre-registration period for trademark owners, but has also provided the Center with a valuable opportunity to broaden its experience as a dispute resolution service provider.

There are two purposes for this Report: the first is to provide a historical and statistical overview of the facts of this project and the second is, where relevant, to help inform future domain name dispute resolution policies and practices. To assist in the latter purpose, Annex 1 contains an evaluation of policy and processing issues that were encountered in the course of this project and that may be taken into account in the development and implementation of future domain name dispute resolution policies. Such issues include policy design, composition of Challenges of Last Resort, WhoIs reliability, as well as Registry, Registrar and party communications.

1. General

The .info domain is one of the seven new generic top-level domains ("gTLDs") approved by ICANN in November 2000. (The others are .aero, .biz, .coop, .museum, .name and .pro.) All registrations in these new gTLDs are subject to the existing Uniform Domain Name Dispute Resolution Policy ("UDRP"). In addition, there are two further types of dispute resolution policies. First, each "chartered" gTLD provides a dispute resolution mechanism for violations of the registration conditions that are particular to that domain (e.g. the Charter Eligibility Dispute Resolution Policy for .museum, which is reserved for recognized museums). Second, some registry operators of the new gTLDs have introduced specific dispute resolution policies designed to resolve disputes occurring during a start-up or "sunrise" phase. Such mechanisms aim to provide trademark owners with additional options for the protection of their rights during the early operation of these domains.

The .info Policy, which was adopted by Afilias, the Registry operator for .info, falls into the second category. Its introduction resulted in part from the choice made by Afilias, under the authority of the Internet Corporation for Assigned Names and Numbers ("ICANN"), that it would not examine, or cause to be examined, (e.g. by requiring submission of trademark certificates or by accessing trademark databases) whether domain name registrations during the start-up phase were based on valid trademark rights on the part of the registrant.

2. Policy and Rules

Afilias implemented a "Sunrise Registration Period" (from July 25 to August 27, 2001) during which trademark holders were given an early opportunity to register domain names identical to the textual elements of their trademarks provided that such trademarks had been registered prior to October 2, 2000. The Sunrise Registration Period was followed by a "Sunrise Challenge Period" (for the general public from August 28 to December 26, 2001; for the Registry after December 26, 2001) that allowed third parties to challenge Sunrise registrations under the .info Policy for non-compliance with the Sunrise Registration Conditions ("Conditions").

The .info Policy was incorporated by reference into the .info Sunrise registration agreement. Under the .info Policy, third parties could initiate challenge proceedings asserting that the domain name registration did not comply with the Conditions, namely that (i) the registrant had no current trademark registration, or (ii) its trademark registration was not of national effect, or (iii) its trademark registration did not issue prior to October 2, 2000, or (iv) the domain name was not identical to the textual elements of its trademark.

Under the terms of the .info Policy and Rules as originally adopted ("Original Policy," "Original Rules"), a Challenger could successfully challenge a registrant and obtain a decision of transfer, without itself having to prove compliance with the Conditions. As a result, a substantial number of Sunrise challenges were filed by Challengers without relevant trademark rights. In order to stop such abuse, the Center assisted Afilias in drafting a modified Policy and Rules which became effective on December 5, 2001 ("Revised Policy," "Revised Rules"). Under the Revised Policy, Challengers requesting transfer were required to prove their compliance with the Conditions by submitting an original or a certified copy of a trademark certificate.

A further purpose of the Revised Policy and Rules was to enable the Registry itself to file challenges against Sunrise registrations that appeared to have been made in violation of the Conditions, but that (e.g. because of their generic character) had remained unchallenged by third parties. These Registry challenges are known as "Challenges of Last Resort."

Following consultations with WIPO, Afilias designated the Center as the exclusive dispute resolution service provider under the .info Policy.

In this capacity, the Center received 15,172 challenges. This caseload was comprised of 1,579 challenges filed by third parties during the Sunrise Challenge Period ("Regular Sunrise challenges") (equivalent to an average filing rate of 12.3 challenges per calendar day) and of 13,593 Challenges of Last Resort filed by the Registry between January 11, 2002 and April 8, 2002 (equivalent to an average filing rate of 154.5 challenges per calendar day).

(The increase in the absolute number of challenges filed in December 2001 likely reflects the impending filing deadline of December 26, 2001.)

The Challenges of Last Resort were received in seven "batches," ranging from 741 to 3,726 challenges per batch.

A significant proportion of the challenges involved domain names comprising generic words, e.g. , , or . Geographical terms, especially country names and city names, were also routinely challenged. With respect to the latter category, challenges filed by cities themselves were often unsuccessful for lack of registered trademark rights. Trademarks such as those of well-known companies were involved only to a lesser extent. This may be due to a variety of factors, including early focus on registration of valuable generic terms, a likely deterrent effect of the .info Policy, and, generally, a lower degree of participation by trademark owners in the new gTLDs than, for example, in the .com domain.

The requirement under the Revised Policy for Challengers seeking transfer to submit an original or a certified copy of a valid trademark certificate led to a decrease in the filing rate of challenges requesting transfer and an increase in the filing rate of challenges requesting cancellation. Among the challenges filed under the Original Policy, an average of 5.5% of the challenges requested cancellation of the domain name registrations. Under the Revised Policy, that number increased to 21.2%.

4. Geographical Distribution of Parties

The geographical spread of the Regular Sunrise cases covered Challengers from 41 countries and Respondents from 51 countries, with parties from 63 countries being involved overall.

The following table shows the countries involved most frequently on Challenger’s side and those on Respondent’s side.

Domicile of Challenger

Number of Cases

Percentage of All Countries

Domicile of Respondent

Number of Cases

Percentage of All Countries

United States of America

511

32.4%

United States of America

427

27%

Germany

474

30.0%

Austria

354

22.1%

Austria

139

8.8%

Germany

243

15.4%

United Kingdom

94

6.0%

United Kingdom

184

11.5%

Italy

81

5.1%

Republic of Korea

53

3.4%

Switzerland

40

2.5%

Australia

47

3.0%

(Annex 5 shows the geographical distribution of the Regular Sunrise case parties in more detail.)

Three of the Challenger countries listed above (United States of America, Germany and United Kingdom) are also among the Center’s top five filing Complainant countries under the UDRP. Likewise, three of the Respondent countries (United States of America, United Kingdom and Republic of Korea) are among the Center’s top five Respondent countries under the UDRP.

5. Results

Unlike procedures under other domain name dispute resolution policies administered by the Center, the Sunrise challenges were decided by the Center itself, i.e., without the appointment of external panelists. The Center’s decisions were of an administrative nature and were based solely on a prima facie examination of any trademark or service mark certificate submitted by a Respondent and/or, under the Revised Policy and Rules, by a Challenger seeking transfer of the domain name. In a limited number of cases, the Center, in accordance with the Rules, consulted relevant national intellectual property offices in the context of reaching its determination.

A. All Challenges Of the 15,172 Sunrise challenges, 14,216 (93.7%) were decided in favor of the Challenger, and 142 (0.9%) were denied. 814 (5.4%) cases were terminated. Sections B and C below show the results separately for the Regular Sunrise challenges and for the Challenges of Last Resort.

B. Regular Sunrise Challenges (Original and Revised Policy) Of the 1,579 Regular Sunrise challenges, 1,196 (75.7%) were decided in favor of the Challenger, and 55 (3.5%) were denied. 328 (20.8%) cases were terminated primarily on the basis of payment deficiencies on the part of Challengers.

These results break down as follows per Policy. Under the Original Policy, 719 (89.4%) decisions were rendered in favor of the Challenger, 651 (90.5%) of which were default judgments, i.e. findings in favor of the Challenger on the basis of the Respondent’s default in the proceedings. Under the Revised Policy, 477 (61.5%) decisions were rendered in favor of the Challenger, 78 (16.4%) receiving a transfer decision, and 399 (83.6%) receiving a cancellation decision. Pursuant to the terms of the Revised Policy, in cases of Respondent default, unlike under the Original Policy, the Center did not issue an automatic default judgment, but examined the Challenger’s trademark rights when the requested remedy was transfer.

C. Challenges of Last Resort (Revised Policy) Because the purpose of Challenges of Last Resort was to eliminate abusive registrations, the remedy requested in such Challenges was limited to cancellation of the domain name registration. Of the 13,593 Challenges of Last Resort, 13,020 (95.8%) were decided in favor of the Challenger, Afilias, and in 87 (0.6 %) cases, the challenge was denied. A further 486 (3.6%) cases were terminated primarily upon a request of withdrawal from the Challenger. The high cancellation rate reflects Afilias’ pre-selection of the names for which it submitted the challenges.

6. Fees

A. Challenger’s Fee The Challenger was required to pay to WIPO a Challenger’s fee of USD 295 at the time of filing the challenge, consisting of a non-refundable fee of USD 75, and a refundable fee of USD 220 (refunded when the Challenger prevailed provided that the Respondent had paid the Respondent’s fee).

B. Respondent ’s Fee The Respondent was required to pay to WIPO a Respondent’s fee of USD 295, within 10 days after the notification of challenge having been sent. If the Respondent paid the Respondent’s fee and established that it had registered the disputed domain name in compliance with the Conditions, the Respondent’s fee was refunded in full.

C. Afilias Separate fee arrangements were made with Afilias to reflect its role as the Registry in the application of the .info Policy and Rules, as well as its role as a mass filer of Challenges of Last Resort.

D. Payment Facilities Given the high volume of cases, all payment information in connection with the Sunrise cases was submitted via online forms made available on the Center’s web site. As a further streamlining measure all payments were handled through secure online payment systems.

7. Case Administration

The following paragraphs describe how the Center administered the Sunrise challenges. A critical evaluation of policy and processing issues encountered in the course of the project is contained in Annex 1.

A. Procedure A Sunrise challenge procedure was normally completed, pursuant to the Rules, within 40 days in cases where no response was filed and within 100 days in cases where a response was filed. The length of the procedure was determined primarily by the time period granted under the Rules to parties for obtaining and submitting certified copies of trademark or service mark registration certificates from the issuing intellectual property office.

The main stages in the Sunrise challenge procedure were as follows:

(i) Filing of a challenge with the Center including online payment by credit card of the Challenge fee.

(ii) Notification of the challenge by the Center to the Respondent requiring payment of the Respondent fee within 10 days, and filing of a response within 60 days.

(iii) Under the Revised Policy, Challengers seeking transfer were also required to submit, no later than 60 days after the notification of the challenge, an original or a certified copy of a trademark registration certificate proving their compliance with the Conditions.

(iv) Case review and decision by the Center.

(v) Notification of the Decision, with possible follow-up in terms of subsequent Challengers (see below, paragraph F on "Queues") and fee arrangements.

B. Online Filing Facility Case filings by parties were required under the Rules to be made electronically using the Online Challenge Forms and Online Response Forms made available on the Center’s web site.

C. Sunrise Case Management System WIPO designed and created a dedicated .info Sunrise case management system. This system was instrumental in allowing the Center to process and track the high volume of Regular Sunrise challenges and Challenges of Last Resort. The information submitted by the parties through the online filing facility was imported into the case management system. The system enabled Center staff to list cases by domain name, date and time received, case number and case manager; to track case status, deadlines, payment status and case outcome for each case; and to provide, for internal and external purposes, a variety of case-related statistical reports, including monthly filing rate, geographical distribution, and case outcome.

An adapted case management system was introduced for Challenges of Last Resort, which included a facility for semi-automated notification of challenges, payment reminders and cancellation notifications, allowing the Center to issue up to 3,000 such notifications to parties in a single day. During the period January 25 to April 15, 2002, notifications of the entire 13,593 Challenges of Last Resort were effected over the course of 13 individual working days. Where e-mail notification was unsuccessful, the Challenge was notified by courier. In addition, notifications were sent to all available fax numbers.

D. Communications In accordance with the Rules, most of the communication involved in the administration of Regular Sunrise challenges and Challenges of Last Resort cases was implemented electronically, involving some 70,214 email messages. In addition, hundreds of faxes, as well as courier and postal shipments were sent; a high volume of telephone inquiries were answered from parties; and telephone conferences and other exchanges with the Registry, Afilias, took place at all stages of this project.

E. Language of Proceedings Pursuant to the Rules, the language of the proceedings was English. However, whenever necessary, the Center answered party queries in other languages.

F. Queues A source of processing complexity, the .info Policy allowed for more than one challenge to be submitted by different parties regarding the same domain name. In such event, the challenges were queued in accordance with the date and time they were received by the Center.

While, in practice, most disputed domain names did not have queued challenges, some of the most sought-after domain names involving generic words, such as (6 challenges) or (7 challenges), had multiple challenges.

(Annex 8 shows the number of Regular Sunrise cases with queued challenges.)

8. Information

In addition to the above-mentioned filing and payment forms, the Center’s web site provided information assisting the parties in filing challenges and responses, as well as, for the Regular Sunrise cases, further details including a listing of all cases and their outcome. At the request of Afilias, the Challenges of Last Resort were not posted.

(Annex 9 provides the general information page of the Center’s web site for the .info Sunrise dispute resolution service and the WIPO Guide to the .info Policy.)

* The Center completed its processing of the vast majority of Sunrise challenges in June 2002.